Minecraft creator Markus Persson has revealed that Bethesda refused an offer to change the name of Mojang's latest game from "Scrolls."

Persson, widely known as "Notch," posted a reaction to a Kotaku article on his blog, attempting to dispel the idea that the legal dispute between the two companies could be resolved by simply changing the name.

"We realised we should apply for the trademark 'Minecraft' to protect our brand. When doing so, we also sent in an application for 'Scrolls'," Persson wrote.

"When Bethesda contacted us, we offered both to change the name to "Scrolls: [some subtitle]" and to give up the trademark. They refused on both counts."

"Whatever reason they have for suing us, it's not a fear of us having a trademark on the word 'Scrolls', as we've offered to give that up."

Bethesda's lawyers sent a letter to Mojang in August claiming that the name infringed its Elder Scrolls trademark. Initially, Persson dismissed the matter as "lawyers being lawyers," but confirmation that the case would reach the courts arrived late in September.

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The numerous articles that exist on this subject are not surprising and the same for the reactions of people, bashing Bethesda etc - whilst personally I am on the fence - organisations like Bethesda have to do things like this to ensure that they are publicly seen actively "defending" their trademarks.

Whilst the average person realise this particular dispute is nonsense, if organisations like Bethesda AREN'T seen as actively "defending" their trademarks, then "people" like Notch or the real cybercriminals (like cybersquatters, for example) would be further encouraged to practice their trades. It's quite simple and quite understandable, really.

@Luke. But from what has been printed, Bethesda don't hold a trademark for "Scrolls" so they don't need to be seen protecting it. They need to protect "Elder Scrolls" which is the tm they own. It also makes sense to block a trademark being granted for Scrolls which may complicate their own, but that's not the same as suing someone for using a tm you don't own. But on top of that, assuming Notch is telling the truth about offering to change the name, there should be no issue anyway.

I think this whole thing suits Notch down to the ground. I really wouldn't feel too sorry for him. He's got more publicity out of this, and well-meaning support from the indie community, than he could have hoped to generate on his own. He's also got the financial muscle to stand up for himself, so all in all I can't see a bad outcome for him.

Each side would need to prove (with empirical evidence) that consumers could or couldn't tell the difference between the two titles at time of purchase. In my experience games consumers are not likely to mix up a retail boxed title with one played online, nor be confused between a tripple A RPG and a collectible card top down strategic board game. A court would hopefully realise the common sense of this and support the defendant, in this case, Mojang.

@Andrew @Nicholas: It doesn't work that way. As noted in the Kotaku article; A trademark is not the same thing as a copyright. If Notch's trademark were granted he'd have universal domain over any use of the word "scroll" in the title of anything, and because trademarks ignore prior use he could also sue Bethesda and destroy their decades long franchise.

And Bethesda are doing what you are supposed to do in these cases; keep your mouth shut and let the courts sort things out. Notch is running his mouth and trying to look like a cute little kicked puppy because blackmailing them with negative PR is all he's got.

Finally; assuming he's telling the truth about offering to change the titled if they drop the lawsuit (which he conveniantly didn't mention until kotaku release an article explaining why he brought the lawsuit on himself) that still means nothing. You can't just apologise and say you'll do something. Lawsuits don't work that way.

To put it simply, I don't trust his word anymore.

Edited 1 times. Last edit by Sebastian Sharpe on 5th October 2011 5:26pm

Notch has generated ongoing publicity out of this for his new game for months now. I would never have heard of this game or paid any attention without him challenging Bethesda to Quake3 deathmatch over it.

Furthermore expecting Bethesda's creative guys to come out and comment is ridiculous, they won't be Notch's saviours for sure, they worked hard on building up the Elder Scrolls, why would they openly contradict their own company policy and let some indie leach their brand value?

Bethesda has always been diligent in protecting its trademarks, particularly those related to the Elder Scrolls franchise. Trademark owners are required to actively police their own trademarks and part of that is sending C&D letters and filing lawsuits in court. This will be settled after Bethesda has satisfied the standard of due diligence in this case.

Regarding the statement that Bethesda owns "Elder Scrolls" and not "Scrolls", the standard for trademark infringement is likelihood for confusion - which is usually defined as a multifactor test in which the courts will look at a multitude of factors including similarity of marks, products, marketing lines, etc. to determine if a consumer will be actually confused. Bethesda will argue that customers in Game Stop will be confused as to whether "Scrolls" is part of the "Elder Scrolls" franchise. The marks are arguably similar and the products are identical (in the court's view, a game is a game is a game), so Bethesda has legs enough to file a case here to protect their intellectual property.

In fact, Mojang's offer to change their trademark to "Scrolls: XXX" isn't very helpful, given that Bethesda does that themselves (i.e. Elder Scrolls IV: Oblivion). Additionally, trademarks exist based on commercial use, not registration (registration with the USPTO just gets you extra legal benefits), so Mojang's willingness to "give up the trademark" must mean their willingness to give up an application for registration because they cannot give up the trademark if they still intend to use it on their product when launched for commercial use. To give up a trademark is to give up using it at all. (For the record, the US is in the minority in the world on this point because most countries use a registration-based system, not a use-based system.)

I don't see how there can be confusion here. If the USPTO have granted both TMs (and i'm not sure they have actually granted Scrolls as a TM yet, last time i looked it was still in the application stage) then Bethesda cannot sue them for owning a TM that is valid. Surely the best thing they can do is contest the TM being granted and then make Notch change the name of the game. Doing otherwise seems stupid because if both TMs are valid then they both have ownership over their repsective marks.

Edited 1 times. Last edit by James Prendergast on 5th October 2011 8:21pm

James, That's not entirely true. Trademarks can be contested on the grounds of validity up until they achieve incontestable status, which usually takes 5 years. They can bring an action to cancel the registration with the USPTO. Even once a mark has been granted incontestability, you can still attempt to cancel the mark on other grounds (such as derogatory, disparaging, etc.), which is what Native American groups have been attempting to do with the Washington Redskins mark for years.

Question: do Bethesda own the trademark for RAGE, because apparently Namco own the trademark for Rage Racer.

I'm not sure what to make of this case generally (as Brandi has pointed out, it's much more complex than first seems with the necessity of trademark protection etc), but I do think Bethesda could do with a bit of PR to counter all the negativity they're getting. And no matter what happens to 'Scrolls', Notch has got more publicity than he ever could have otherwise hoped for!

@James Gallagher - good call man! That really helped my understanding of this stuff, I've often been confused on the differences between those. It seems to me that Bethesda might not have much of a case here, since I don't think the two things would be that easily confused. Two entirely different games, and it's not like they're trying to market Scrolls as if it's an Elder Scrolls game... which makes me wonder why their panties are in such a bunch. If Notch was outright imitating the Elder Scrolls I could see their problem.

The biggest question I have here is this: How often do you really hear the average gamer say he wants to buy "The Elder Scrolls: {insert game title} "? Usually you hear them referred to as Morrowind, Oblivion, or Skyrim.
I understand that Bethesda wants to be seen defending their trademarks, that's just good business. But in this case I think its a bit silly. I find it very hard to believe that anybody would confuse a game named Scrolls, with any of Bethesda's Elder Scrolls series.

PS- I still think the deathmatch idea was a hilarious and original idea to solve this problem.

Edited 1 times. Last edit by Irvin Franklin on 7th October 2011 6:36am

@Phil Blunt: There is so much wrong with that statement I don't know where to begin.

1. Zenimax have much more money than Mojong. They probably make more money in a given timeframe than he has overall. If money was their motivation then they'd be going elsewhere.
2. They aren't suing for money, but trademark.